Regeneron Pharmaceuticals, Inc. v. Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo
Case No. D2021-2270
1. The PartiesThe Complainant is Regeneron Pharmaceuticals, Inc., United States of America (“United States”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Gabriella Garlo, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 3, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 5, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2021.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on September 22, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundThe Complainant, Regeneron Pharmaceuticals, Inc., is a New York corporation, active since 1988 in the research and development, manufacture, and sale of pharmaceutical products.
The Complainant is the owner of a large number of REGENERON trademarks across various jurisdictions.
The Complainant is the owner, amongst others, of:
- the United States trademark REGENERON with registration No. 1,654,595, filed August 16, 1990 and registered August 20, 1991, covering “research and development of medicines and treatments for neurological diseases and psychiatric disorders” in International Class 42;
- the United States trademark REGENERON with registration No. 1,933,337, filed September 17, 1990 and registered November 7, 1995, covering “pharmaceuticals for treatment of diseases in humans, namely, diseases and/or injuries to internal organs” in International Class 5;
- the European Union Trade Mark REGENERON with registration No. 014638225, filed October 2, 2015 and registered March 1, 2016, covering “research and development services for pharmaceuticals and for the treatment of diseases and injuries” in International Class 42;
- the European Union Trade Mark REGENERON with registration No. 015696644, filed on July 27, 2016 and registered on January 2, 2017, covering “pharmaceutical preparations for use in the treatment of lipid metabolism disorders and hypercholesterolemia” in International Class 5.
The Complainant is also the registrant of the domain name
The Complainant has invested heavily in advertisement. It has also won several awards in specialist literature.
The disputed domain name was registered on February 1, 2021, well after the Complainant secured its rights to the trademarks. According to the evidence provided by the Complainant, the disputed domain name resolved to a webpage displaying several “related searches” links, including the search links “Pharmaceutical Company” and “Vascular”.
5. Parties’ Contentions A. ComplainantOn the merits, the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the disputed domain name is confusingly similar to the registered trademarks in which the Complainant has rights, as the disputed domain name reproduces the trademark REGENERON in its entirety.
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant states that there is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain names incorporating the Complainant’s REGENERON trademark.
The Complainant further argues that REGENERON is a coined word, which is not and cannot be argued to be the name or nickname of the Respondent, and which can in no other way be identified with or related to any rights or legitimate interests of the Respondent. According to the Complainant, the use of the REGENERON trademark aims therefore exclusively at seeking to create an association with the Complainant and its activities.
(c) the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the choice of the Respondent to register the disputed domain name containing the coined word REGENERON clearly demonstrates the Respondent’s awareness of the Complainant’s name, business, and trademarks, and its desire to capitalize on the goodwill associated with them.
The Complainant believes that the Respondent must have had prior notice of the Complainant’s rights in the REGENERON trademark by virtue of the Complainant’s use of the REGENERON mark in commerce in the United States since 1988 and its registration in the United States in 1991. Such actual or constructive knowledge of the Complainant’s trademark rights would be a significant factor constituting bad faith registration and use of the disputed domain name.
The Complainant further asserts that the Respondent used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the web page hosted at the disputed domain name, by creating a likelihood of confusion with the Complainant’s REGENERON mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name in violation of paragraph 4(b)(iv) of the Policy. Specifically, the disputed domain name resolves to a page displaying several “related searches”, including the links “Pharmaceutical Company” and “Vascular”, clearly showing the Respondent’s awareness of the Complainant and its business in the pharmaceutical / medical field and the will to capitalize on the goodwill of the Complainant’s REGENERON mark (see Union InVivo v. Kim Dushinski,WIPO Case No. D2020-1214; Aozora Bank, Ltd. v. Hirofumi Nishioka, WIPO Case No. D2012-1221).
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to REGENERON.
Secondly, the disputed domain name consists of the trademark REGENERON, in which the Complainant has rights, and the generic Top-Level Domain (“gTLD”) “.careers”. This Panel finds, similarly to other UDRP panels, that the relevant comparison is made between the second level portion of the domain name and the Complainant’s trademark (see Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; Bank Nagelmackers N.V. v. WhoisGuard, Inc / Paulo Giardini,WIPO Case No. D2016-0819). The gTLD is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test (see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is identical to the Complainant’s REGENERON trademark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii); or
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is a well-established view of past UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (see Aguas de Cabreiroa, S.A.U. v. Hello Domain,WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson,WIPO Case No. D2016-1338).
In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
This Panel retains notably the following factors:
- there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant (see Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055);
- there is no evidence that the Respondent has been commonly known by the disputed domain name;
- there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place.
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Each one of the four circumstances in paragraph 4(b) of the Policy, if found, would individually be an instance of “registration and use of a domain name in bad faith”.
A registration in bad faith occurs, inter alia, where the respondent knew or should have known of the registration and use of the trademark(s) prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name thirty years after the Complainant started using and registered the REGENERON trademarks. The Complainant’s reputation and its presence on the Internet and in the press makes it unlikely that the Respondent was unaware that the registration of the disputed domain name would violate the Complainant’s rights.
This finding is enhanced by the fact that the disputed domain name resolves to a parking page displaying within its search links, e.g. “Pharmaceutical Company” and “Vascular”, which indicates the Respondent’s awareness of the Complainant and its business in the pharmaceutical / medical field (see Union InVivo v. Kim Dushinski,WIPO Case No. D2020-1214; Aozora Bank, Ltd. v. Hirofumi Nishioka, WIPO Case No. D2012-1221). In doing so, the Respondent attempted to capitalize on the goodwill attached to the Complainant’s REGENERON trademark, according to Policy, paragraph 4(b)(iv).
In light of the undisputed evidence provided by the Complainant, the Panel is satisfied that the disputed domain name is registered and used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
Benoit Van Asbroeck
Sole Panelist
Date: October 6, 2021